Ex Parte Attride et al

Board of Patent Appeals and Interferences

Jan 27, 2012

11239588 (B.P.A.I. Jan. 27, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/239,588 09/29/2005 Roy R. Attride PU05 0404US/ 2002-190 2646
54472 7590 01/27/2012
COATS & BENNETT/SONY ERICSSON
1400 CRESCENT GREEN
SUITE 300
CARY, NC 27518
EXAMINER
O BRIEN, JEFFREY D
ART UNIT PAPER NUMBER
3677
MAIL DATE DELIVERY MODE
01/27/2012 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte ROY R. ATTRIDE and JOHN THOMAS SADLER
____________________

Appeal 2010-000922
Application 11/239,588
Technology Center 3600
____________________

Before: STEFAN STAICOVICI, KEN B. BARRETT, and
CHARLES N. GREENHUT, Administrative Patent Judges.

GREENHUT, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-000922
Application 11/239,588
2
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1-
18 and 20-25. Br. 2. We have jurisdiction under 35 U.S.C. § 6(b). We
affirm-in-part.
The claims are directed to a wireless communications device. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A wireless communications device comprising:
a first housing;
a second housing; and
a hinge mechanism for pivotably connecting the first and
second housings, the hinge mechanism comprising:
an axially movable floating shaft extending within the
first housing;
a bracket extending from the second housing, and having
an opening in one end to retain the floating shaft;
a cam member mounted on the floating shaft; and
a biasing system configured to bias the cam member and
the floating shaft axially towards the opening in the bracket to:
maintain the floating shaft within the opening; and
provide a yielding resistance when at least one of the first
and second housings is pivoted about the hinge mechanism.

REJECTIONS
Claims 1-5, 16, 18, 20, 22, and 25 are rejected under 35 U.S.C.
§ 102(b) as anticipated by Won (U.S. 6,950,686 B2 iss. Sep. 27, 2005). Ans.
3.
Claims 6, 8-14, 17 and 21 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Won. Ans. 7.
Claims 7, 15, 23 and 24 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Won and Hayashi (U.S. 6,920,668 B2, iss. Jul. 26, 2005).
Ans. 10.

Appeal 2010-000922
Application 11/239,588
3
OPINION
Appellants offer arguments concerning independent claims 1, 8 and
16. Appellants do not present separate arguments for the remaining appealed
claims, but rely on their dependency from an independent claim. Br. 7, 8, 9.
As such, the dependent claims stand or fall with their respective parent
claim. The sole issue raised by Appellants regarding claims 1, 8 and 16
relates to movability of the “floating shaft.” Br. 5-9. The Examiner found
that Won’s shaft 50 is “floating” and/or “axially movable” because there is
no structure in Won preventing Won’s shaft 50, including integrally formed
hinge piece 51, from moving, at least slightly, from right to left as viewed in
Won’s Figure 3, i.e., into “Gap A” and “Gap B” as viewed in the Examiner’s
annotated Figure 3. Ans. 11, 15. Appellants contend that Won’s shaft 50 is
incapable of moving since it is “fixed” via snap ring 23 to housing 20. Br. 6.
However, as the Examiner points out, Appellants’ understanding of Won’s
snap ring 23 and use of the term “fixed” does not address the Examiner’s
position. Ans. 11-13. Once the shaft 50 is inserted into the hole 21 in
housing 20, snap ring 23, in cooperation with washer 22, “fixe[s]” the shaft
50 in the sense that it cannot be withdrawn from the housing 20 by retreating
through hole 21, i.e., left to right as viewed in Figure 3. Won, col. 3, ll. 18-
45. This is not dispositive as to whether the shaft 50 could move right to left
from the Figure 3 position.
[W]here the Patent Office has reason to believe that a
functional limitation asserted to be critical for establishing
novelty in the claimed subject matter may, in fact, be an
inherent characteristic of the prior art, it possesses the authority
to require the applicant to prove that the subject matter shown
to be in the prior art does not possess the characteristic relied
on.
In re Swinehart, 439 F.2d 210, 213 (CCPA 1971).
Appeal 2010-000922
Application 11/239,588
4
We disagree with Appellants that the Examiner’s determination
regarding the presence of “Gap A” and “Gap B” is based purely on
speculation and patent drawings not stated to be drawn to scale. See Br. 6.
The space labeled “Gap B” is for lubrication and is expressly discussed by
Won at column 3, lines 37-41. While the space labeled “Gap A” is not
expressly discussed, and there is no indication that Figure 3 is drawn to
scale, a gap that is clearly shown in the figure cannot be disregarded. See In
re Mraz, 455 F.2d 1069, 1072 (CCPA 1972) (discussing In re Bager, 47
F.2d 951, 952-53 (CCPA 1931)). Thus, at least prior to assembly, i.e., before
hinge piece 51 is inserted in Hinge 3, we find no structure preventing Won’s
shaft 50 from being able to move into “Gap A” and “Gap B” as described by
the Examiner.
Appellants contend that even if such minimal movement is possible, it
would not render the shaft “axially movable” obvious as one of ordinary
skill in the art would understand that term. Br. 7. We disagree. As the
Examiner points out, it is well-settled that during examination claim terms
are given their broadest reasonable interpretation in light of the Specification
without reading limitations from the Specification into the claims. Ans. 13;
In re Prater, 415 F.2d 1393, 1404-05 (CCPA 1969). Appellants point out
that the axial movement described in the Specification must be “enough to
allow a user to align the end of the floating shaft with an opening in the
bracket.” Br. 7 citing Spec. 6, para. [0023]. The fact that the preferred
embodiment describes a particular magnitude of axial movement does not
alter the meaning of the term “axially movable” itself. We see no reason to
import into the claims the specific magnitude of axial movement described
in the Specification, particularly where Appellants chose to omit it in
drafting the claims.
Appeal 2010-000922
Application 11/239,588
5
Thus, we agree with the Examiner that at least prior to assembly,
Won’s shaft is “floating” and/or “axially movable.” Ans. 11 (“the shaft (50)
could be movable when assembled, and certainly would be axially moved
within the recess (4) during assembly or disassembly”). Since there is no
language in claims 1 and 16 that requires the shaft to be movable once
assembled, this is sufficient to meet the limitation in question for purposes of
those claims. While claim 16 is a method claim, the “floating shaft” is
claimed as a property of the pivot mechanism. Thus, the Examiner’s finding
of inherency is appropriate. Further, regarding claim 16, the claimed
“biasing” encouraging engagement with hinge 3 would be performed by
Won’s spring 30 acting on cam shaft 40, contacting follower protrusion 53
of shaft 50, regardless of whether shaft 50 is capable of axial movement
once assembled.
For the above reasons, the Examiner’s rejection of claims 1 and 16,
and the rejections of the claims depending therefrom, are affirmed.
Since claim 8 requires that the housings be connected, the claimed
device must be able to move axially while assembled. It is unclear from
Won how hinge piece 51 interacts with hinge 3 once Won’s device is
assembled. Hinge 3 could either restrict or allow axial movement of hinge
piece 51 and integrally formed shaft 50. The Examiner appears to recognize
that the ability of the shaft 50 to move axially is less certain in the assembled
configuration. Ans. 11 ( “shaft (50) could be movable when assembled”).
Before an applicant can be put to the burdensome task of proving that
the subject matter shown in the prior art does not inherently possess the
functional characteristic relied on, the examiner must provide sufficient
evidence or technical reasoning to establish a sound basis for the examiner’s
belief that the functional limitation is an inherent characteristic of the prior
Appeal 2010-000922
Application 11/239,588
6
art. See In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990). The fact that a
certain result or characteristic may occur or be present in the prior art is not
sufficient to establish inherency. In re Rijckaert, 9 F.3d 1531, 1534 (Fed.
Cir. 1993) (citation omitted). “In relying upon the theory of inherency, the
examiner must provide a basis in fact and/or technical reasoning to
reasonably support the determination that the allegedly inherent
characteristic necessarily flows from the teachings of the applied prior art.”
Ex parte Levy, 17 USPQ2d 1461, 1464 (BPAI 1990) (citations omitted).
Since there is no evidence or reasoning to demonstrate that Won’s
hinge 3 necessarily allows for, as opposed to restricts, axial movement, the
Examiner failed to establish by a preponderance of the evidence the
reasonableness of the belief that the ability to move axially once assembled
necessarily flows from the teachings of the applied prior art. See In re
Caveney, 761 F.2d 671, 674 (Fed. Cir. 1985). The Examiner did not
articulate any reasoning, based on Hayashi or otherwise, to cure this
deficiency. Accordingly, the rejection of claim 8, and the rejections of the
claims depending therefrom, are reversed.

DECISION
The Examiner’s rejections of claims 1-7, 16-18 and 20-25 are
affirmed.
The Examiner’s rejections of claims 8-15 are reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED-IN-PART
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